When should financial services institutions assert business method patents?

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

When should financial services institutions assert business method patents?

In the close-knit financial services industry, where a company’s competitors are also frequently its customers, when should financial services institutions assert business method patents against competitors?

At a lively panel discussion at the 10th Annual Patent for Financial Services Summit last week, speakers talked about some of the complications specifically faced by financial services institutions in relation to enforcing patents.

For example, how would a decision to pursue a patent infringement suit against a customer who is also a competitor impact a company’s revenue streams and reputation?

Panellists agreed that in addition to assessing the strength of the patents, lawyers should consult key personnel in sales and other departments as soon as possible about whether the lawsuit is wise from a business perspective.

Moderator Charles Macedo, a partner of AmsterRothstein & Ebenstein, said counsel should clarify with businesspeople the conditions under which they would be willing to settle or abandon the litigation. If the company decides to proceed with the claim, consultations are advisable as market conditions and the lawsuit’s likelihood of success may change over time.

“You may have this decision come out and your likelihood of winning the case goes from 80/20 to 50/50,” he said. “You may have the CLS v Alice decision come out, then it’s who knows what. Congress may pass a law. All those things can impact what you do.”

The latest instalment in the long-running CLS v Alice case was delivered in May, when the Federal Circuit sitting en banc invalidated Alice’s patents for a computerised trading system which acts as an intermediary between traders. It was the second time that the Court had considered the case, having vacated its previous panel decision to uphold the patent claims. In a 135-page decision, the judges appeared deeply divided over questions such as when, if ever, computer implementation can make an otherwise abstract idea eligible for patent protection.

Patent attorneys have previously voiced concerns that the case makes it difficult to advise clients on the likelihood of success in lawsuits involving business method patents. Alice is now considering whether or not it will appeal to the Supreme Court.

“If the Supreme Court takes that case on what’s patent-eligible subject matter, that affects everyone in this room,” said Macedo.

Some considerations for business people in the midst of a trial may include: Do reasons for action continue to exist? Are you getting what you hoped for? Are there reasons to change strategy? What options exist? Should you seek, or accept an offer, to settle? Have risks changed?

more from across site and SHARED ros bottom lb

More from across our site

IP specialists Jonathan Moss and Jessie Bowhill, who worked on cases concerning bitcoin, Ed Sheeran, and the Getty v Stability AI dispute, received the KC nod
Hannah Brown, an active AIPPI member, argues that DEI commitments must be backed up with actions, not just words
A ruling in the Kodak v Fujifilm dispute and a win for Google were among the major recent developments
Nick Aries and Elizabeth Louca at Bird & Bird unpick the legal questions raised by a very public social media spat concerning the ‘Brooklyn Beckham’ trademark
Michael Conway, who joined Birketts after nearly two decades at an IP boutique, says he was intrigued by the challenge of joining a general practice firm
The private-equity-backed firm said hires from DLA Piper and Eversheds Sutherland will help it become the IP partner of choice for innovative businesses
The acquisition is expected to help Clorox bolster its position in the health and hygiene consumer products market
AIPPI, which has faced boycott threats over the 2027 World Congress, says it has a long-standing commitment to engagement and geographic rotation
The shortlist for our annual Americas Awards will be published next month, with potential winners in more than 90 categories set to be revealed
News of Nokia signing a licensing deal with a Chinese automaker and Linklaters appointing a new head of tech and IP were also among the top talking points
Gift this article